MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez, Paola Becerril and Eduardo Saldaña, BC&B Law & Business
2.6 Related Rights Trade marks may be subject to double protec - tion, both as copyrighted material and under the FLPIP, simultaneously. However, different legal statutes are relied on to obtain this protection. Copyrights are declarative in that that they are protected once the are fixed in a support mate - rial and the Mexican Copyright Office (INDAU - TOR) confirms and declares in favour of the authors the existence of copyrighted material. This is in contrast with trade marks, which are constitutive and require a registration procedure to ensure protection. A logo, for example, could therefore receive cumulative protection as copyrighted material in the form of a drawing work and as a trade mark as a design. The FLPIP establishes prohibitions on the regis - tration of trade marks when: • they constitute names, surnames, appella - tives or pseudonyms which could be well known or prestigious and could cause con - fuse or deceive consumers; • they are a personal image, identifiable voice, portrait/picture or signature of a person; • they are identical or confusingly similar names to the titles of artistic or literary works; • they constitute reproductions or imitations of elements of literary and/or artistic works; and/ or • they are partial or complete reproductions of literary and/or artistic works. It may be possible to overcome these prohi - bitions by obtaining the express consent of the author/titleholder having the legal right to authorise the registration of such elements.
Trade mark rights have a validity of ten years from the granting of the registration date and are renewable indefinitely, as long as the owner fulfils specific obligations, including declaration of their use and paying the renewal fees. 2.4 Use in Commerce To establish use of a trade mark is it necessary to show the following: • Actual use in commerce – ie, the trade mark must be actively used in connection with the goods or services for which it is registered (mere intention to use is insufficient). • Geographic scope – its use must occur within Mexico, as foreign use does not satisfy local requirements. • Continuity of use – sporadic or symbolic use does not meet the threshold; the use must be genuine and consistent. • Evidence – proof may include sales records, invoices, (proper document to prove use) advertising or product packaging showing the trade mark in active use and such documents must contain (i) the mark as it was registered, (ii) the goods or services, (iii) the date and place, and (iv) the owner or licensee. 2.5 Notices and Symbols Trade mark owners may use specific symbols to denote the status of their marks. The registered mark symbol (®) indicates that the trade mark is registered before the Mexican Institute of Indus - trial Property (IMPI). Only marks that have been officially registered before IMPI can use the ® symbol. Unauthorised use of this symbol can lead to legal consequenc - es. While there are no immediate legal penalties for failing to use the ® symbol, it is advisable to do so once the mark is registered.
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